OPPOSITION No B 2 557 554
Beeswift Limited, West Wing, Delta House, Delta Point, Greets Green Road, West Bromwich, West Midlands B70 9PL, United Kingdom (opponent), represented by Gordon Dadds LLP, 6 Agar Street, London WC2N 4HN, United Kingdom (professional representative)
a g a i n s t
Buckler Boots Limited, The Workit Centre, Fulton Road, Dundee DD2 4SW, United Kingdom (applicant), represented by Tennant IP Limited, 10 Llanthewy Road, Newport Newport (Casnewydd GB-CNW) NP20 4JR, United Kingdom (professional representative).
On 22/03/2017, the Opposition Division takes the following
1. Opposition No B 2 557 554 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods of European Union trade mark application No 13 894 399. The opposition is based on European trade mark registration No 3 280 203. The opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The goods
The goods on which the opposition is based are the following:
Class 9: Clothing and footwear for protection against accidents, irradiation and fire; protective gloves, protective helmets.
Class 25: Clothing, footwear, headgear.
The contested goods are the following:
Class 9: Articles of protective and safety clothing, footwear and headgear for protection against accident and injury.
Class 25: Clothing, footwear, headgear.
Contested goods in Class 9
The contested articles of protective and safety clothing, footwear and headgear for protection against accident and injury include, as a broader category, the opponent’s clothing and footwear for protection against accidents, irradiation and fire; protective gloves, protective helmets. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
Contested goods in Class 25
Clothing, footwear, headgear are identically contained in both lists of goods.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods found to be identical are either directed at the public at large or at business customers with specific professional knowledge or expertise.
The impact on safety of goods covered by a trade mark (e.g. lights for vehicles, saws, electric accumulators, electric circuit breakers, electric relays) may result in an increase in the relevant consumer’s degree of attention (22/03/2011, T-486/07, CA, EU:T:2011:104, § 41). It goes without saying that the same principle applies to the goods in class 9 which are articles for the protection against accident and injuries. Therefore, the degree of attention as regards these goods will be rather high, whereas it is deemed to be average for the goods in class 25.
- The signs
Earlier trade mark
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
Both marks are figurative marks. The earlier mark is the depiction of a bird in black, flying from left to right, with two thin vertical lines placed between the wings and the tail and, thus, resembling the letter ‘B’, in a highly stylized manner.
The contested sign, on the other hand, depicts clearly the letter ‘B’ in a white standard typeface on a black background where the left side of the background forms an arrow-like extension.
Both signs have no elements that could be considered clearly more distinctive or more visually dominant than other elements.
The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short signs small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.
Visually, the signs coincide only in the presence of the letter ‘B’. However, they differ in the way it is depicted. In particular, the earlier mark is highly stylized, since the figurative device of the flying bird resembles said letter only due to the presence of two thin vertical lines.
The contested sign, on the other hand, is more basic and depicts the letter clearly and on the first sight in a standard type within a simple background, the only non-standard element being the arrow-like extension.
Therefore, the signs are visually similar to a very low degree.
Aurally, the pronunciation of the signs coincides identically in the sound of the letter ‛B’, since the figurative elements will not influence the pronunciation.
Therefore the signs are aurally identical.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks, that is, in both the letter ‘B’ will be recognized, however, in the earlier mark depicted in a stylized way resembling a ‘bird’. As both signs will be perceived as the letter ‘B’, the signs are conceptually nearly identical.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The goods are identical and the signs are conceptually nearly and aurally totally identical, however, visually only similar to a very low degree.
As a general principle, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
The similarities between the signs are limited to the letter ‘B’.
It follows from case law that in the assessment of likelihood of confusion between signs comprising the same letters, the visual comparison is in principle decisive. The aural and even conceptual identity may be overridden by sufficient visual differences. Indeed the Court made it clear that in cases of trade marks consisting of the same letter, a sufficiently different visual impression may safely rule out a likelihood of confusion even in cases when there is aural and conceptual identity (10/05/2011, T.187/10, G. EU:T:2011:202, § 60.)
Consequently, a likelihood of confusion can be safely excluded when two conflicting signs, albeit containing the same single letter, are stylised in a sufficiently different way so that their different overall graphical representation eclipses the common verbal element.
Considering this, the way the letter appears in each sign is determinant. The letter is depicted in a very different manner in the two signs. As mentioned above, the signs are only visually similar to a low degree, and – in spite of the identity of the goods– this is not sufficient to find a likelihood of confusion.
Given the fact that the level of attention is high for the goods in class 9, and in the absence of any enhanced distinctiveness of the earlier mark, there cannot be another finding.
Furthermore and as regards the goods in class 25, it has to be noted that generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused by the figurative stylization of each sign are particularly relevant when assessing the likelihood of confusion between them, leading in the case at hand to the same finding as in relation to the goods in class 9, that is, any likelihood of confusion can also be excluded for the goods in class 25.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.